October 31, 2018

In September 1997, Asolo Ltd, filed an application to register a EU trade mark for FLÜGEL (which translates as “wing”) in classes 32 (including “Beers; mineral and aerated waters and other non-alcoholic drinks”) and 33 (“Alcoholic drinks (except beers)”).

Facts

In December 2011, Red Bull GmbH filed an application for a declaration of invalidity of Asolo’s mark based on two Austrian registrations for VERLEIHT FLÜGEL (which translates as “gives wings”) and RED BULL VERLEIHT FLÜÜÜGEL, both registered in class 32 for “energy drinks”.

The Cancellation Division granted Red Bull’s request for a declaration of invalidity for all of the goods covered by Asolo’s mark.  Asolo appealed the decision.

The Fifth Board of Appeal dismissed the appeal, finding that “energy drinks”, and “alcoholic drinks (except beers)” were similar.  It said that there was a connection between the two categories of goods because alcoholic drinks and energy drinks were often mixed and consumed together.

Asolo appealed to the General Court.

Arguments of the parties

Asolo argued that that there was no likelihood of confusion between the signs for the purposes of Article 8(1)(b) of the EU Trade Mark Regulation (2017/1001/EC) because, contrary to the findings of the BoA, the goods in question were not similar.  Further, it said, Red Bull itself always denied any connection between energy drinks and alcoholic drinks, as demonstrated by the fact that it included on its drinks cans a sentence stating, “do not mix with alcohol”.  Red Bull also always claimed that its product made consumers more energetic and alert, which was the opposite effect of consuming alcoholic drinks; a consumer wishing to remain alert, such as a driver, would not consider substituting an alcoholic drink for a non-alcoholic energy drink, Asolo said.

Red Bull argued that the practice of mixing energy drinks and alcoholic drinks was very common among young people in Austria.  This was clear from Asolo’s own evidence in connection with the mixed drink “FLÜGERL”, which comprised vodka and Red Bull.  In addition, Red Bull said, both products were “party drinks” since they were both consumed by the same consumers at the same locations.   They were also interchangeable and in competition with each other, could be mixed, and had a very similar stimulating and energising nature.  The only thing that made them different was the presence of alcohol.

Decision

The GC said that a very large number of alcoholic and non-alcoholic drinks were generally mixed, consumed, or indeed marketed together, either in the same establishments or as premixed alcoholic drinks.  However, to consider that those goods should, for that reason alone, be described as similar, when they were not intended to be consumed in either the same circumstances, or in the same state of mind, or, as the case may be, by the same consumers, would put a large number of goods described as “drinks” into one and the same category for the purposes of Article 8(1).

That was not the correct way of looking at the issue, given that the nature, intended purpose and use of the goods differed precisely because of the presence or absence of alcohol.  Further, undertakings that marketed alcoholic drinks premixed with a non-alcoholic ingredient did not sell that ingredient separately and under the same or similar mark as premixed alcoholic drinks.

Further, according to case law, the average German consumer was used to and aware of the distinction between alcoholic and non-alcoholic drinks.  There was no reason why this should not also be true for the relevant Austrian public.  The relevant public would therefore make the distinction when comparing an energy drink with an alcoholic drink.  The mere fact that energy drinks could be marketed and consumed with alcoholic drinks was not, the GC said, sufficient to challenge that finding.

Despite a body of case law on the existence of a low degree of similarity between alcoholic drinks and non-alcoholic drinks, the GC held that the BoA had been wrong to find any similarity between the two products.  Although the courts might previously have acknowledged, in circumstances that were not identical to this case, a low degree of similarity between alcoholic drinks and non-alcoholic drinks, that was not sufficient to challenge the GC’s findings.

Accordingly, the GC annulled the BoA’s decision that there was a likelihood of confusion between the signs as a result of alcoholic drinks and energy drinks being similar.  (Asolo Ltd v EUIPO (FLÜGEL) [2018] EUECJ T-150/17 (4 October 2018) — to read the judgment in full, click here).